Tyler Hall redux on what trademarks do

Tyler Hall writes:

I received an interesting follow up to my previous post about trademarks and promotional goods. The response touched on some questions regarding the foundations of trademark law that I’ve wanted (and tried to) write about for a long time now.


In my earlier post I talked about what I called trademarks-as-products in contrast to the traditional function of trademarks as source-identifiers. Here, building off the response to my post I want to ask what happens to trademark law if everything turns out to be a trademark-as-a-product.

I invited him to come back and do it again right here.

Tyler is a business attorney at Black Helterline LLP, where he focuses on trademarks and copyrights, contracts, and licensing work and — strictly on his own time — on Twitter @winslowthall.

As is the case with all guest posts, your regular blogger has added some graphics and some links just to remind everyone who’s in charge.– RDC

Traditional, Source-Identifying Trademarks vs the Trademark-as-a-Product

As source-identifiers, trademarks help consumers distinguish between competing products, signalling that a product comes from a specific source. This helps consumers quickly identify the product they want, having the reliable quality they associate with the source the trademark identifies. Accordingly, the traditional justification for granting a trademark owner a limited monopoly over the trademark is to prevent consumers from misinterpreting just that signal.

As developed in my previous post, “trademarks-as-products” describes a somewhat different situation.  Instead of relying on a trademark to identify the source of a product, the consumer is buying the product for the opportunity to identify himself with the source — and to identify themselves with the other individuals so self-identifying.

Trademarks-as-Products and Likelihood of Confusion Harm

Another way of thinking of trademarks-as-products is this:  consumers buy swag in order to decorate themselves with items that say something to the world: “I like X,” or “I am a person of type Y.”  To the extent the swag consumer buys “to express oneself,” and not “to get reliable quality” the consumer cannot be harmed by confusion about origin (let alone sponsorship), because the consumer simply doesn’t care.

I agree with the response that there can’t be likelihood of confusion harm when consumers are buying products to express themselves and identify themselves with the source of the product. That is, there is no likelihood of confusion harm when it comes to trademarks-as-products.

Resistance is futile

A fan of Nike or Ferrari buys a t-shirt with that company’s logo to show others that the fan self-identifies as a fan of that company. It doesn’t matter to the fan if the t-shirt actually comes from Nike or Ferrari. It doesn’t matter that it is an “authentic” product or of a certain reliable quality. What matters is that the product has the Nike or Ferrari mark and therefore carries the expressive qualities imbued in the mark. Even if a shirt with the Nike swoosh doesn’t come from Nike the consumer still gets the means of self-expression and identification with Nike they were after, so where’s the consumer confusion? No harm, no foul, right?


I’ve always believed that preventing likelihood of confusion harm should be the touchstone of trademark law and the justification for enforcing the limited monopoly of any given trademark.

If the trademark-as-product phenomenon were limited to promotional goods it would present an interesting question about trademark law. But it is not. We see consumers buying a company’s “primary” goods — the goods on which the company originally built its reputation — as trademarks-as-products, not because they seek authenticity or reliable quality. And this shift to trademarks-as-products shakes that foundation and should cause us to at least re-consider why we protect trademarks.

Is Everything a Trademark-as-a-Product?

Take a hike

Nike built its reputation by selling good sneakers, and Ferrari by selling fast, high-quality cars. These are the companies’ primary goods. The swoosh and Ferrari insignia came to signal to consumers that sneakers with a swoosh and cars with the Ferrari shield came from Nike and Ferrari respectively. Presumably their original purpose was to assure consumers with respect to an expectation regarding quality. And when trademarks work that way, the monopoly on their use is justified by protecting against a likelihood of confusion.

Today, however, primary goods, things like sneakers from Nike or cars from Ferrari, are bought as trademarks-as-products just like promotional goods; they are bought merely as means of self-expression and identification instead of for any authenticity or reliable level of quality the trademark communicates. People buy Nike sneakers without any intention to run, only to be seen wearing the swoosh (or at least what looks like the swoosh) and identifying as a Nike-wearer. People buy Ferraris just to leave in the driveway, for passerby to see and imagine just how sophisticated the owner of something with a Ferrari insignia (or at least what looks like the insignia) might be.

Can Trademark Law Justify Itself If Everything’s a Trademark-as-a-Product?

As consumers’ primary purchasing motivation increasingly becomes self-expression through trademarks does avoiding consumer confusion still justify the limited monopoly of trademark law?  If not — and I don’t think it does — where does that leave us? Do we stop protecting trademarks where consumers are increasingly interested with self-expression over authenticity and reliable quality?

While self-expression seems to increasingly be the primary motivation behind various types of products, there are still some products bought primarily for authenticity and reliable quality, where likelihood of confusion harm is real and traditional trademark protection still makes sense. Or in other cases two consumers will buy the same good for different reasons, one for reliable quality, another for expression. Would we need to evaluate the primary purchasing motivation for any given product or purchase to determine whether traditional trademark protection and likelihood of confusion analysis should apply?

Are there other grounds we could turn to that reasonably justify a limited monopoly? While sweat of the brow doesn’t apply to copyright law, could a similar concept count for something in trademark law. A trademark’s value is in how consumers perceive it. That perception is, at least in part, influenced by the time, energy, and creativity the company has invested in using their mark to distinguish themselves and in expressing a compelling narrative and identity for its brand. Without losing sight of likelihood of confusion harm altogether, can we also respect that certain je ne sais quoi [Ed. note: I don’t know what he means by this — RDC] successful companies use to cultivate a trademark? Can we do this without completely perverting trademark law?

You shouldn’t have to spend millions

I don’t think that dollars spent or marketing budget should equate to greater protection. But as more products are bought as trademarks-as-products, the rationale for trademarks as preventing traditional likelihood of confusion is weaker. We need to re-examine why we protect trademarks and, perhaps, identify other “ownership” rights that are related to, but are not the same as, trademark rights so that we can understand what the law protects, and why.

Leave a Reply